WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Magna International Inc. v. Roger Wells

Case No. D2018-1780

1. The Parties

The Complainant is Magna International of Aurora, Ontario, Canada, represented by Gowlings WLG (Canada) LLP, Canada.

The Respondent is Roger Wells of Toronto, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <decostarindustriesco.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 7, 2018. On August 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 4, 2018.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 7, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a global automotive supplier which was founded in 1957, is implemented in 28 countries and 4 continents, and is listed on the Toronto Stock Exchange in Canada and the New York Stock Exchange in the United States of America ("United States").

The Complainant operates through its wholly-owned subsidiary Decostar Industries Inc. since at least 2002 under the business names and trademarks DECOSTAR and DECOSTAR INDUSTRIES (thereafter the DECOSTAR trademarks).

The Complainant owns a pending United States trademark application for DECOSTAR under No. 87375321 and asserts unregistered trademark rights on the DECOSTAR trademarks.

The disputed domain name was first registered on October 1, 2017 and redirects visitors to the Complainant's official website, at "www.magna.com".

5. Parties' Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant considers that the disputed domain name is confusingly similar to the DECOSTAR trademarks in which it has rights since before the date of registration of the disputed domain name, underlining that the UDRP Policy affords protection to both registered and unregistered trademarks.

The Complainant argues that "decostar" is a distinctive element and that the Complainant has rights in the DECOSTAR trademarks since they have been used in association with the Complainant's products and services in the United States and elsewhere in the world for at least 16 years, and thus have acquired significant secondary meaning.

In support of this allegation, the Complainant provides samples of invoices showing use of the DECOSTAR trademark and a photograph of a sign appearing outside of a manufacturing and distribution facility in the United States, that displays the DECOSTAR trademark, precising that the DECOSTAR trademark is similarly displayed outside of its other various manufacturing and distribution facilities.

The Complainant also underlines that its website "www.magna.com" features the DECOSTAR trademarks for promoting its subsidiary business, and actively promotes the products and services offered under the DECOSTAR trademarks through social media platforms, including YouTube, Facebook, Twitter, LinkedIn and Instagram.

The Complainant cites the decision Magna International Inc. v. Roger Wells and William Green, WIPO Case No. D2017-0888, which found that the "decostar industries" term had acquired secondary meaning, at least in the state of Georgia, in a case that involved the same respondent, namely Roger Wells.

The Complainant finally asserts that the disputed domain name is confusingly similar to the DECOSTAR trademarks since it contains the whole distinctive "decostar" and "decostar industries" terms, the addition of the descriptive and non-distinctive suffix "co", which is the abbreviation of "company", being insufficient to avoid confusion, as well as the addition of the generic Top-Level Domain ("gTLD") ".com".

Secondly, the Complainant contends that the Respondent has never been authorized, nor licensed, to register or use any of the DECOSTAR trademarks, and that the fact that the disputed domain name currently redirects visitors to the Complainant's website suggests that the Respondent uses it to fraudulently represent itself as the Complainant.

Thirdly, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith, for the purpose of disrupting the business of the Complainant by using email addresses associated with the disputed domain name to impersonate the Complainant and attempting to make large commercial purchases from third parties while purporting to be the Complainant.

In addition to the abovementioned UDRP panel decision that involved the same respondent, namely Roger Wells, and the <decostarindustries.com> domain name, the Complainant mentions that it has previously been targeted by a registrant with similar registrant information to the Respondent, including registrant, administrative and technical contact information, who used email addresses connected with the domain name <magnacaa.com> in order to negotiate and conclude large commercial transactions with third-party businesses, purporting to be an employee of the Complainant.

On the basis of the above, the Complainant requests the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant relies upon a trademark application for DECOSTAR and unregistered rights on DECOSTAR trademarks.

Paragraph 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition ("WIPO Overview 3.0") provides the following on what needs to be shown by a complainant in this regard:

"To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

[…]

As noted in section 1.1.2, for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.

[…]

The fact that a respondent is shown to have been targeting the complainant's mark (e.g., based on the manner in which the related website is used) may support the complainant's assertion that its mark has achieved significance as a source identifier."

Considering the above, the Panel finds that the Complainant has provided evidence that the DECOSTAR trademarks have acquired significant secondary meaning, since the Complainant notably showed that it uses the DECOSTAR trademarks in association with its products and services in the United States and elsewhere in the world since 2002, and that it promotes these products and services in particular through various social media platforms and its own website "www.magna.com".

Moreover, it is obvious that the Respondent has been targeting the Complainant's trademarks, since the disputed domain name redirects visitors to the Complainant's official website "www.magna.com".

The Panel also notes that another UDRP panel found in a former decision that involved the same respondent and a very similar domain name, namely <decostarindustries.com>, that "decostar industries" had acquired secondary meaning, at least in the state of Georgia (see Magna International Inc. v. Roger Wells and William Green, supra).

Then, the Panel notices that the disputed domain name is composed of (i) the distinctive element "decostarindustries", which contains the exact reproduction of the DECOSTAR trademarks, (ii) the suffix "co" which is the abbreviation of "company" (iii) and the gTLD ".com". As pointed out by the Complainant, the applicable gTLD in a domain name is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview 3.0).

Regarding the disputed domain name, the Panel finds that the addition of the "industries" term and the suffix "co", which is the abbreviation of "company", to the DECOSTAR trademarks does not avoid a finding of confusing similarity.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant's trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name.

These circumstances are:

(i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the Complainant shows prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

The Panel finds that the Complainant has shown prima facie that the Respondent is not affiliated with the Complainant and has not been permitted, licensed or otherwise authorized by the Complainant to use its DECOSTAR trademarks. The Respondent is not commonly known by the disputed domain name. The redirection of the disputed domain name to the Complainant's official website does not give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent.

The Complainant having established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production has been shifted to the Respondent. However, the Respondent has not provided any response to the Complainant's contentions.

Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the complainant shall prove that the disputed domain name has been registered and are being used in bad faith.

Paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent's bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.

The Panel considers it obvious that the Respondent registered the disputed domain name in bad faith, since he has already been involved in a previous UDRP case relating to the <decostarindustries.com> domain name, which the UDRP panel decided to transfer to the Complainant in view of the fraudulent activities carried out by the Respondent through this domain name.

The Panel also finds that the Complainant has shown that the Respondent uses the disputed domain name for the purpose of disrupting the business of the Complainant, since the disputed domain name redirects visitors to the Complainant's website in order to deceive Internet users and third party businesses who may receive emails from email addresses incorporating the disputed domain name that a connection exists between the Complainant and the disputed domain name.

The Panel notes as well that the Complainant had previously been targeted by a registrant with similar registrant information to the Respondent, who used email addresses connected with the domain name <magnacaa.com> in order to negotiate and conclude large commercial transactions with third-party businesses, purporting to be an employee of the Complainant.

Finally, the Panel notices that the Respondent did not answer to the Complaint in order to demonstrate that it registered and uses the disputed domain name in good faith.

In light of the above, the Panel believes that the Complainant's concerns that the disputed domain name has been registered and is used for the same purpose of carrying out fraudulent activities is well-founded, and thus that the Complainant has met its obligation resulting from paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <decostarindustriesco.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: September 24, 2018